WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutz AG v. 张振锋 (Zhang Zhen Feng), 广州道依茨发电机有限公司 (guang zhou dao yi ci fa dian ji you xian gong si)

Case No. D2021-1914

1. The Parties

The Complainant is Deutz AG, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.

The Respondent is 张振锋 (Zhang Zhen Feng), 广州道依茨发电机有限公司 (guang zhou dao yi ci fa dian ji you xian gong si), China.

2. The Domain Name and Registrar

The disputed domain name <deutz-germany.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2021. On June 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center requested the Complainant to amend the Mutual Jurisdiction selection in the Complaint. The Complainant filed the amendments to the Complaint in English on June 28, 2021.

On June 25, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 28, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on September 2, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a manufacturer of engines, headquartered in Germany and founded in 1864. The Complainant particularly produces diesel engines and engine components for agricultural machinery, marine propulsion, automobiles and construction equipment, and distributes them on a worldwide basis, through an extensive network of distributors, including in the Respondent’s jurisdiction China.

The Complainant owns a portfolio of trademark registrations for DEUTZ, and provides evidence of registration for Chinese trademark registration number 872557 registered on September 21, 1996. The Complainant also owns a portfolio of official domain names, such as <deutz.com> registered on April 18, 1996, <deutz-germany.cn> registered on May 23, 2021, and <deutz-germany.com.cn> registered on May 23, 2021. The relevant registered trademark registration adduced by the Complainant was successfully registered prior to the registration date of the disputed domain name, which was created on November 24, 2018. The Complainant submits evidence proving that the disputed domain name directs to an active website, containing information and marketing materials related to engines and spare parts.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for DEUTZ, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive, famous and used intensively, and submits a number of previous UDRP panel decisions which have recognized the Complainant’s trademark rights in DEUTZ, and also provides a printout of its official website and an online encyclopedia. The Complainant particularly contends that that there are no justifications for the use of its trademarks in the disputed domain name, and claims that the Respondent is misleading Internet users to the website linked to the disputed domain name, for commercial gain, in order to attract them to its own products and services. The Complainant also contends that the Respondent is trying to exploit the reputation and prestige of the famous mark DEUTZ in order to promote engines and spare parts, of which some compete with the Complainant’s products. The Complainant argues that such use of the disputed domain name does not confer rights in the disputed domain name to the Respondent and constitutes registration and use in bad faith of the disputed domain name.

On the basis of the above arguments, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.

The Complainant states that to the best of its knowledge the Registration Agreement is in Chinese. Nevertheless, the Complainant filed the Complaint in English, and requested that the language of the proceeding be English.

The Panel has carefully considered all elements of this case in considering this request, and attaches particular relevance to the following elements: the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this case by the Respondent (the Panel notes that the Respondent was timely invited by the Center in Chinese and English to provide its response in either English or Chinese); the fact that the disputed domain name is a combination of the Complainant’s trademark with the word “Germany” written in English rather than in Chinese; and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the mark DEUTZ based on its registration and use of the same as a registered trademark.

Moreover, as to confusing similarity of the disputed domain name with the Complainant’s trademark, the disputed domain name consists of the combination of two elements, which are the Complainant’s DEUTZ trademark and the geographical term “Germany”, connected by a hyphen. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its sole distinctive and dominant feature, and that the addition of the geographical term “Germany” does not prevent a finding of confusing similarity. The Panel also finds that the hyphen may be disregarded as it is considered merely a punctuation mark (see also Accor and SoLuxury HMC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Lin Qing Feng, WIPO Case No. D2016-1262). Furthermore, the Panel concludes that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the Complainant has satisfied the requirements for the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, the Respondent did not provide any Response or evidence in this administrative proceeding.

On review of the facts, the Panel notes that the disputed domain name directs to an active website, containing information and marketing materials related to engines and spare parts, including the logos of some of the Complainant’s main competitors. The Panel also notes that such website does not contain any disclaimer disclosing the lack of any relationship between the Complainant and the Respondent, but instead contains information about the Complainant and its Deutz brand right below the photos of the products sold on the website. The Complainant states that it is unable to determine whether the goods offered on such website are original Deutz products or counterfeit. Nevertheless, the Panel concludes that this fact is irrelevant in this case because even if the products were genuine, this would not, in these circumstances, confer on the Respondent any rights or legitimate interestes in the disputed domain name, see in this regard earlier UDRP decisions such as Deutz AG v. Liushuliang, WIPO Case No. D2013-1807 and Deutz AG v. su su xiaoji, WIPO Case No. D2015-0272; and WIPO Overview 3.0, section 2.8.

Furthermore, the nature of the disputed domain name, being confusingly similar to the Complainant’s trademark for DEUTZ and also being very similar to the Complainant’s official domain names <deutz-germany.cn> and <deutz-germany.com.cn>, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant (see WIPO Overview 3.0, section 2.5.1).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

Given the reputation and fame of the Complainant’s trademarks, the registration of the disputed domain name, which incorporates such trademarks in their entirety, is clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns, trademarks protecting the mark DEUTZ and uses these extensively, including in the Respondent’s home jurisdiction China. This finding is reinforced by the fact that the Complainant is headquartered in Germany and has an existing network of distributors in China, and that the registration of the disputed domain name, including the word “-Germany”, was therefore intended to mislead the Complainant’s customers into thinking that the disputed domain name is operated by, or at least endorsed by the Complainant. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.

As to use of the disputed domain name in bad faith, the disputed domain name directs to an active website, containing information and marketing materials and offering products and services related to engines and spare parts to Internet users for commercial gain. The Panel therefore considers that the Respondent is using the Complainant’s trademarks in the disputed domain name to mislead Internet users and attract them to the website linked to the disputed domain name for commercial gain, in order to be able to provide such Internet users with products and services related to engines and spare parts. The Panel accepts that this constitutes direct evidence of bad faith under paragraph 4 (b)(iv) of the Policy. On the basis of the foregoing, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <deutz-germany.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: September 16, 2021